Troutman Sanders LLP: Federal Circuit Reverses Judge Hilton Claim Construction in Software Patent Suit

Troutman Sanders LLP: Federal Circuit Reverses Judge Hilton Claim Construction in Software Patent Suit

By Dabney Carr

In a July 31 decision, the Federal Circuit reversed Judge Claude Hilton's claim construction in an Eastern District of Virginia patent infringement suit relating to software that enables one computer to access another computer over the Internet. 01 Communique Lab., Inc. v. LogMeIn, Inc.No. 2011-1403 (Fed. Cir. July 31, 2012) found here

The patent at issue disclosed the use of a "locator server computer" which includes software referred to as a "location facility."  The location facility creates a connection between a "remote computer" and the computer to be accessed, called a "personal computer," by receiving a request for communication from the remote computer, locating the personal computer and then creating a communication channel between the two remote computers.

In claim construction, Judge Hilton concluded that the location facility must be contained on a single physical computer and granted summary judgment of non-infringement because the system used by the accused infringer, LogMeIn, did not contain a single component that performed all the functions of the claimed location facility.

Judge Hilton's "single computer" construction was based primarily on a perceived disclaimer in the prosecution history. At the Federal Circuit, LogMeIn made four arguments in support of that construction:

  • First, LogMeIn argued that the claims consistently referred to the locator server computer in the singular. The Federal Circuit quickly dismissed this argument based on its "general rule" that the words "a" or "an"carry the meaning "one or more" except under extremely limited circumstances where a patentee evinces a clear intent to limit "a" or "an" to "one." 
  • Second, LogMeIn argued that the patentee had disclaimed a broader construction of "location facility" during an inter partes reexamination brought by a third party. LogMeIn argued, and Judge Hilton agreed, that statements by the patentee's expert disclaimed distribution of the location facility among multiple computers. The Federal Circuit held that Judge Hilton had simply misinterpreted the expert's statements and that the expert had not addressed whether the location facility must be based on a single computer. 
  • Third, LogMeIn argued that the patentee had disclaimed distribution of the location facility among multiple computers in order to avoid rejection based on two prior art references. The Federal Circuit held, however, that nothing in the record suggests a disclaimer based upon the statements made by the patentee in response to the prior art. Rather, it appeared to the Federal Circuit that Judge Hilton may have mistakenly believed that the "location facility" was a device, rather than software, leading to an erroneous claim construction.  
  • Finally, LogMeIn argued that the patentee effectively disclaimed a location facility distributed among multiple computers when it cancelled a claim defining "locator server computer" to encompass multiple computers after the claim was rejected by the examiner. The Federal Circuit pointed out, however, that the examiner allowed several other claims disclosing multiple locator server computers. 

The 01 Communique decision illustrates the Federal Circuit's ongoing willingness to re-write District Court claim constructions, particularly for cases involving software or other high-technology patents. While respectful, the Federal Circuit clearly thought that Judge Hilton's reference to the location facility as a "device", rather than software, indicated a fundamental misunderstanding of the nature of the patented system which led to an erroneous claim construction. 

Copyright © 2012, Troutman Sanders LLP

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